(Each image links to the corresponding application on file with the U.S. Patent and Trademark Office – USPTO).

Spoiler alert:

This post contains the USPTO’s ultimate decision regarding the registrability of the design and layout of various application icons as part of a computer operating system, using rectangular geometric figures in rows. However, it isn’t a spoiler for Apple’s applications referenced above (those applications have yet to be assigned to an examining attorney).

No, instead, I’m referring to a since-abandoned application that provides some interesting contrast with Apple’s applications. In 2012, Microsoft filed an intent-to-use application for the mark shown below:

The USPTO examining attorney initially refused registration requiring a new drawing due to a potential for the existence of a phantom element of a mark, namely, the appearance of the “start” button and the “user name” element. The examiner also advised that, upon submission of evidence of use, the mark may be refused on the ground that it was merely ornamental and failed to serve any source identifying feature.

Microsoft submitted a substitute drawing and amended the mark to make clear that the “start” button and the “user name” element were not claimed as a feature of the mark. The examining attorney issued a subsequent refusal based on the presence of phantom elements in the mark, claiming that the mark contained “changeable elements.” After Microsoft failed to respond, the application was deemed abandoned. (Note that it appears there may be some issues with the examiner’s refusal, as a refusal for a “phantom element” normally requires that the phantom element be claimed in some way as a feature of the mark.).

It appears that Apple may have taken a few pointers from Microsoft’s unsuccessful efforts. Compare Microsoft’s description of its mark:

The mark consists of two groups of tiles arranged in at least five rows. In the first group, the first and second rows are comprised of a rectangle followed by two squares and the third, fourth and fifth rows are comprised of two adjacent rectangles. In the second group, the first row is comprised of a rectangle and the third, fourth and fifth rows are comprised of two adjacent squares. The second row comprises a rectangular boundary surrounding a rectangle formed from two combined squares. The borders of the mark, the rectangle formed from two combined squares, the terms “Start” and “User Name”, and other matter shown in broken lines are not part of the mark.

With Apple’s:

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.

Apple’s description is much more concise. It also does not contain open-ended terminology such as “at least five rows.” Apple was also careful not to include any discernible words, like “Start” or “User Name,” in the drawing. Microsoft also included a number of additional tiles that were not claimed as a feature of the mark, but appeared identical to those icons which were claimed. In contrast, Apple specified its claim to reference all 22 icons, rather than only claim a portion of the icons.

Note that in two of three applications, Apple included the shape of the phone as well. Perhaps Apple feared that the mere layout of square icons might face the same fate as Microsoft’s application. Will this, along with the other changes, be sufficient for Apple to push the applications through to registration?

My immediate reaction is that, if you take away the shape of the phone and the content of the icons, I’m not convinced I would notice the difference between an iOS operating system, Microsoft Windows / Tiles, or an Android. It’s hard to imagine, but read through the mark descriptions and try to imagine the layout with only the features claimed, with no other content. In my head, that just looks like a computer screen, regardless of whether its the size of a phone, Hardy Boys book, or a Trapper Keeper.

Apple certainly appears to have put some thought into their application strategy, though. I’m sure they’ve mapped out responses to potential refusals as well. Even if Apple is unsuccessful at registering these marks, at least they’ll have successfully given us something to talk about here, which I’m sure would be a wonderful consolation prize.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

"My best business intelligence, in one easy email…"

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Privacy Policy (Updated: October 8, 2015):

hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.